Appeal No. 2001-2584 Page 9
Application No. 08/462,817
In re Soll, 97 F.2d 623, 38 USPQ 189 (CCPA 1938); In re Wahlforss, 117 F.21
270, 48 USPQ 397 (CCPA 1941), “[i]t appears to be well settled that a single
species can rarely, if ever, afford support for a generic claim.” On the surface, by
quoting this particular section from Clarke, it would appear that the examiner is
concerned that appellants have not provided evidence of a sufficient number of
species to represent a genus. This is, however, inconsistent with the examiner’s
position (Answer, page 10), that Green
can only be antedated by showing that [a]pplicant[s], prior to the
publication of Green et al., had reduced to practice the now-
claimed genus, or a species of the now-claimed genus which would
have rendered the species described by Green et al. to have been
obvious. … [T]he novelty of the instant invention is found in the
“exogenous DNA” encoding the “steroid receptor protein. Applicant
has failed to explain how the reduction to practice of an isolated
cDNA encoding a human glucocorticoid receptor would have
rendered obvious the isolated cDNA encoding the estrogen
receptor of Green et al.
The inconsistency in the examiner’s position is highlighted by appellants’
response (Reply Brief, bridging paragraph, pages 8-9), where with reference to
In re Tanczyn, 347 F.2d 830, 146 USPQ 298 (CCPA 1965); In re Wakefield, 422
F.2d 897, 164 USPQ 636 (CCPA 1970); and The Manual of Patent Examining
Procedure (MPEP), appellants argue:
[A] 37 CFR 1.131 affidavit or declaration must establish possession
of either the whole invention claimed or something falling within the
claim (such as a species of a claimed genus), in the sense that the
claim as a whole reads on it. … If the affidavit contains facts
showing a completion of the invention commensurate with the
claims and as shown in the reference, the affidavit or declaration is
sufficient, whether or not it is a showing of the identical disclosure
of the reference.
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